25Feb 2021

In a recent case, Horizon Pharma, Inc. v. Dr. Reddy’s Laboratories Inc., the Federal Circuit reviewed the claim construction de novo, and agreed with the District Court holding of indefiniteness.

The claim at issue recited:

“A method for treating osteoarthritis, …wherein: the AM and PM unit dose forms target…”

According to the District and the Federal Courts the term “targets” of claim 1 renders the claim indefinite because a dose form cannot set a goal. Therefore, according to the Federal Circuit, the claim is indefinite because it is nonsensical.

The problem with this decision is that a patent might be considered invalid based on a wrong claim construction. 

The specification discloses the term “targets” but does not define or explain its meaning. During prosecution, “targets” was accepted to mean “produces” which was also disclosed in the specification. Moreover, the patentee was aware of the different meaning of “target” and “produce.”

Therefore, why was the claim considered indefinite?

Please contact me at silvia@salvadorilaw.com with questions or comments.

Silvia Salvadori, PhD

Silvia Salvadori, PhD